Never Too Rich or Too Thin: The Strong Trademark Standard

“You can never be too rich or too thin” has been attributed to Wallace Simpson, the colorful Duchess of Windsor who charmed King George to abdicate the throne of England in 1936.[1] However, when it comes to trademarks, a mark that is lacking a bit of heft is not likely to stand.

A strong trademark is a ‘must-have’ for a company to distinguish their product or service from those of their competitors. It is essential for customers to locate, and be attracted to, a particular product or service among a large array of options. In practical terms, “strong trademarks” tend to be both creative and real with no inherent relevance to the represented product, as well as highly suggestive. For example, the mark for the bus service “Greyhound” suggests speedy service. “Diehard” batteries suggest their durability. In contrast, the “Apple” mark for computers and electronic devices has no direct relevance to the fruit, and is clearly “arbitrary”, an attribute which strengthens the case for a trademark registration.

The recent ruling by the Federal Circuit on Real Foods v. Frito Lay well-demonstrates the standards used by the U.S. Patent and Trademark Office to grant the registration of brand names as Federal trademarks. On February 21, 2017, the Trademark Trial and Appeal Board declined the registration of the Australian snack company Real Foods’ marks for “Corn Thins” and “Rice Thins”. The Board explained that while the term “Thins” is non-generic, and the marks are “merely descriptive,” they have not an “acquired distinctiveness” that would warrant a registration.

Furthermore, a mark is unacceptable for trademark registration when it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. However, if the merely descriptive mark has a proven “secondary meaning” (i.e. acquired distinctiveness) that it has distinctiveness as applied to the applicant’s goods or services in commerce, then the mark is registrable under the Trademark Act. Generic terms are “the ultimate in descriptiveness” that are incapable of acquiring distinctiveness because they are common terms used in commerce to describe the respective goods and services.

Real Foods appealed the Board decision to the U.S. Court of Appeals for the Federal Circuit. Frito Lay opposed this proceeding as a cross-appellant. On October 4, 2018, the Court decided against Real Foods and opposed the registration of the marks, while reversing Frito Lay’s opposition on the ground of “genericness”. The Court agreed with the Board’s decision, echoing that Real Foods’ marks are “merely descriptive” of the goods and do not have the “acquired distinctiveness” to deserve exclusive trademark rights. Judge Evan J. Wallach stated that the terms ‘corn’ and ‘rice,’ describe the primary ingredient in Real Food’s respective goods, and the term ‘thins’ describes physical characteristics of the corn and rice cakes, all without any other distinctive recognitions. The Court had also said that the Board used incorrect definitions to conclude that the Real Foods’ marks are not generic terms and remanded the case to the Trademark Trial and Appeal Board for a reconsideration of the issue in terms of their genericness.

This decision slightly deviates from but is relevant to our previous discussion on the decision by the Federal Circuit Court of Appeals in Royal Crown Co., Inc. v. The Coca-Cola Co. The Coca-Cola Company (TCCC) was able to successfully register their “Zero” trademark before the U.S. Patent and Trademark Office but lost its trademark rights after the Circuit sided with Royal Crown Cola Company, TCCC’s competitor, who appealed against the registration of “Zero.” In this case, unlike the Real Foods case, the Circuit did not specifically comment on whether the term “Zero” qualifies as a trademark or not, but rather denounced the Board for erring in their legal approach to examine whether TCCC should claim exclusive trademark rights to the term “Zero.”

The take away is axiomatic. To successfully register trademark rights, one should create a “strong mark” that is not highly descriptive. Clearly, one can never be too rich or too thin!

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.